Tuesday, 10 July 2012

Bedding Holdings v INEC & others: the latest development and the moral discourse

At the least, learn one or two unique features of litigation in this jurisdiction: it can be haphazard; so expect anything, but it can also be frustratingly protracted. Readers can
remember when this Leo first broke the news on the case of Bedding Holdings v INEC and others (a case where patent rights nearly halted the 2011 elections in
Nigeria) here and his subsequent pieces (when the court cleared the way for INEC to conduct the
elections using the then apparent patented boxes) here,
here and here.

Recent patent decision

On
5 June 2012, a judgment (Suit No. FHC/ABJ/CS/82/11) was handed down by Hon.
Justice A. Bello in the substantive suit –this
time, the Registrar of Patent was joined as a defendant- which ruled in
favour of the claimant on all grounds including an injunction. This judgment was
kindly analysed here on Afro IP by Chukwuyere Izuogu; but by way of summary, it declared and ordered as follows:

(a)That the claimant’s patent and registered design
rights granted on 12 January 1998 and 27 November, 2006 are valid and
subsisting.

(b)That the above rights were prior art; therefore, the
subsequent patent and design rights granted by the Registrar to the 3rd
and 4th defendant on 14 October 2010 were contrary to the provisions
of the Patent and Designs Act (PDA) (NB: may not be up-to-date, as stated below) and therefore not valid [Basic principles of the patent system]

(c)That the Registrar erroneously granted patent and
design rights to the 2nd defendant; therefore, those rights are null
and void [well,
at least Afro Leo knows that no IP office is infallible]

(d)That any dealing whatsoever, by the defendants -for
example, INEC- in relation to the product in dispute, without the claimant’s
consent is unconstitutional, illegal, unlawful and therefore, null and void. [Aha, so this is the
sticking point that is silently worrying most politicians and INEC in
particular, at the moment in Nigeria, says Afro Leo]

(e)A perpetual injunction restraining the Registrar from
granting subsequent patent and/or design rights which would infringe on the
claimant’s valid and existing rights [Afro Leo is thinking: in other words, the court is enjoining
the IP office to do its job properly – perhaps, goodamending the PDA to require examination of patent
applications might be a starting point]

Reaction in the media

It
was not surprising that many, including lawyers and politicians, began to analyse
the judgment. Due to these concerns including the ones raised by the media (see here, here
and here),
INEC issued a press release which was also reported here and here,
stating its own position on the
judgment.

According to the release, INEC refuted media claims that the judgment
nullified the elections in 2011 arguing that the patented boxes referred to in
the judgment were not the ones used in 2011 but also further stated that it had
no intention of using those boxes in the upcoming election. [Basically, INEC
intends to obey the judgment; but it is also saying that the patented boxes in dispute were not actually used in 2011, according to the statement, there are other boxes out there (readers can learn more on this from the statement). Afro Leo would like to know why the defendants had to go to court to discharge the interim injunction?(see above)]

Contempt of Court

Today,
this Leo is very much puzzled [not really, says Afro Leo] to learn yet again, according
to news reports here and here that the same court that reached the decision on 5 June 2012 has now issued “Form 48” - a
Notice of Consequences of Disobedience of Court order- against INEC
including its chairman, and the Registrar of Patent, Federal Ministry of
Commerce and Trade, following indications that INEC is planning to use the infringing boxes in an upcoming election.

Conclusion

So what
would the outcome of this latest development be? Well, this Leo can say for a
fact that he has no idea where this is going. He can only try his best not to
get sucked into this legal but potentially political quagmire, by focusing on
all things IP. Therefore, it is fair to comment that this is yet another great news for IP in Nigeria because it doesn't just show the court's increasing willingness to assist IPRs owners, but also that this action will serve towards increasing IP awareness.

Afro Leo kindly urges any legal practitioner in Nigeria reading
this to share his or her thoughts and/or information gathered on the ground on this.

Morality of intellectual property
rights (IPRs)?

Those
opposed to the notion of IPRs or the powers afforded to it, may well see this - whether or not, it eventually affects the democratic process - as yet another reference point
as to why IP in general or 'strict' IP enforcement, is not good for developing countries. However, as this Leo
understands – according to the only available
source which he found online and which he warns may not be up-to-date [This is where a
website for the Nigerian IP office website would have helped, only if you could find a copy of the legislation under Laws & Policies, says Afro Leo]– there are provisions in the PDA which
allow government agencies or ministers to use any article protected by a patent
if it is in the public interest to do so (see
Part II, sections 15 to 23). Why these provisions were not invoked, or to be on a safe
side, why a license was not obtained - apparently, like in 2003 - is anyone’s guess. Fortunately, we also learned last year, that the High Court – in the
injunctive relief proceedings - ruled that the public interest (the conduct
of free and fair elections in 2011) overweighed intellectual property rights – damages being appropriate remedy. Therefore, IPRs do have their limitations and there are other flexibilities too; whether these flexibilities and/or limitations go far enough is for academic discourse.

The question then becomes:
should a subsequent court hearing a suit which challenges the validity of the
2011 elections place a IPRs (private property) above political and social stability in
Nigeria?

Unknown

6
comments

Am just puzzled by the Court order (part e of your analysis) restraining the Registrar from granting subsequent patent and/or design rights which would infringe on the claimant’s valid and existing rights.

Firstly, from the basics of patent law, a patent cannot infringe another patent; it is the activities by third parties such as making or selling products covered by the patent that can infringe the patent.Secondly, it’s debatable whether the Registrar or the patent Office for that matter, save for the role of determining the patentability of an invention, has the capacity and time to deal with infringement of IP rights.

Unless the Court in Nigeria wants to delegate its responsibility, it remains to be seen how the Registrar in Nigeria will handle the added responsibility- at least for as long as the claimant’s patent is in force!

Yes, I do agree with you that it is puzzling; hence, I could not get round saying much on this case due to a variety of information floating about. But I tried my best to paraphrase the text of the apparent ‘correct’ judgment which I received.

The injunction sounds like the court is re-writing the legislation by forcing the Registry to examine patentability from now on – safe to speak, in respect of a patent application covering inventions similar to that of the claimant. And yes, that sounds like delegating its responsibility as you said, and I should have further commented as such in my post. But I referred the readers to Chukwuyere’s analysis.

As Chukwuyere commented, this is the fault of the PDA and not the Registry, to see what I mean, take a look at Section 4 (1) and (2) and the caveat in subsection (4). Basically, the Registry does not examine patentability when presented with a patent application [I omitted this in my post but referred to Chukwuyere’s analysis]. That is why pursuant to Section 9, the court is there to be doing what (ideally) should have been done by the Registry – but this time post-grant.

So what appears to have happened here is that the court must have examined the patents in question to declare the claimant’s patent valid, and the defendants’ patents (subsequently granted by the Registry) invalid due to prior art (claimant’s valid patent). In essence, the defendants’ invention was neither new nor an improvement on the claimant’s patented invention. For reference see Section 1 PDA.

My understanding is that the order was not meant to mandate the Registry to deal with any prohibited activities affecting the claimant’s patent rights (infringement), rather, to consider patentability from now on in respect of any subsequent applications – which reading again, seems like the court is already rubber-stamping the claimant’s patent as if there can never be any designing around it.

I have a feeling that the claimant had no choice than to join the Registry as it was scared (from its experience but never knew it wasn't the fault of the Registry). At the end of the day, the aim was to defeat INEC all round.

New to this blog, and reading it from Europe, I find this (my) first post on a patent matter very interesting, but also puzzling.I do not know the whole case, and unfortunately do not have the time to really explore it, so this comment is solely based on the current post.

Actually, like the first commentator, it looks to me like if this judgement was overlooking some patent law aspects.

First, under under point (b). The fact that a prior right is prior art to a second patent application does not necessarily impair the patentability of the second application. The second patent application may cover some improved version of the first one, and the first one does not automatically its novelty and inventiveness. Of coures, if the second one is exactly covering the subject-matter of the first one, it is affecting eitehr the novelty or inventiveness of the second. This is the limitation of my comment, which, as I said, is solely based on the content of this post.

Second, point (e) is also troubling, for the reason already indicated, but not only. It is normally not the job of a patent office to look at infringement matters, but, in correlation with my comment for point (a) above, it is very much possible to have several patents covering a similar subject-matter. A first one might cover the claimed product in generic terms, and subsequent ones might cover novel and inventive improved versions of it, which are then perfectly patentable. This is actually one of the purposes of the patent systems, to publish patent applications so as to allow others to improve technologies, and possibly patent them too.

Since this comment is also made from a European perspective, it may be that the reasoning could not be applicable to Nigerian patent law, and I apology if that would be the case.

Looking forward to more interesting patent posts like this one on Afro IP.

Again, I think it is evident that many more will also be puzzled :-); hence, the SOS to IP practitioners from Nigeria to enlighten us on what the actual state of patent law and practice in Nigeria is and whether the court was right (according to patent norms) to rule as such.

Please do have a look at Chukwuyere's analysis to this judgment for a start; he is a practitioner in Nigeria. I am also happy to upload a copy of the judgment which I have so everyone can comment on its content.

Brill! Kingsley I noted a few interesting points from the case:1. The judgment was a default judgment of sorts. The Hon. Judge merely granted of all the Plaintiff's prayers as requested.In fact, out of all the 6 defendants, only the Attorney General's Office who entered an appearance in protest, was represented. The court ultimately excused the AG from the proceedings. The defendants were undefended.

2. The matter wasn't considered on the merits. The Hon. Judge did not inquire into the validity of either the Plaintiff's patent or any of the subsequent patents. The plaintiff's patents and designs were simply held to take 'priority' over the subsequent patents and designs (this is obviously due to the fact that none of the defendants, including the Registrar of Trademarks filed pleadings or Counter affidavits).

3. As Kingsley said, the Nigerian PDA provides for the grant of Compulsory Licenses in certain instances, one of which is based on overriding public interest. However, the Nigerian Constitution also guarantees the right to own property and to receive fair and just compensation in cases where Government compulsorily acquires the individual's property. I'm surprised INEC didn't explore this option from the outset.

Pardon me, the 1st paragraph should say:1. The judgment was a default judgment of sorts. The Hon. Judge merely granted all of the Plaintiff's prayers as requested.In fact, out of the 6 defendants, only the Attorney General (who entered an appearance in protest) was represented. The court ultimately excused the AG from the proceedings. The suit was practically undefended.

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